Insights

New York – June 3, 2020: For over five years, Palomar Technologies, Inc. (“Palomar”) has been asserting what has now been confirmed to be an invalid patent before the U.S. District Court for the District of Massachusetts. Palomar alleges that MRSI Systems, LLC (“MRSI”) infringes U.S. Patent No. 6,776,327. The claimed method, which Palomar refers to as “double pick,” is directed to “placing an item at a final location more accurately by first moving it to an intermediate location.” While Palomar tried to dress its claimed method up as a manufacturing process, the claims are recited at a high level of generality and abstraction. After five years of costly litigation, the verdict came down on May 28, 2020 by Chief Judge Saylor: a litigation team lead by Brian Paul Gearing, Ph.D. proved by clear and convincing evidence that Palomar’s patent claims subject matter that is not patentable and is therefore invalid under 35 U.S.C. § 101.

New York – May 8, 2020: A trial team led by Brian Paul Gearing, Ph.D. won a first-ever bench trial on whether estoppel based on an earlier inter partes review before the USPTO’s Patent Trial and Appeal Board (“IPR estoppel”) applies to new prior art references asserted in a district court litigation. Chief Judge Saylor of the U.S. District Court for the District of Massachusetts held in favor of Crowell & Moring’s client MRSI Systems, LLC that IPR estoppel does not preclude the two new prior art references not asserted in the earlier inter partes review proceeding. 

Traditionally, a response to a Final Office Action (“FOA”) issued by the United States Patent and Trademark Office (“USPTO”) often involves filing a Request for Continued Examination (“RCE”) in order for the Examiner to consider further claim amendments.  In 2013, the USPTO launched the After Final Consideration Pilot program 2.0 (“AFCP 2.0”) as an alternative.  The AFCP 2.0 program allows patent applicants to request consideration of an amendment after a FOA without additional fees and grants examiners extra time to review the after-final amendment.  This provides applicants the chance to file after-final amendments without incurring the significant fees associated with an RCE.  The AFCP 2.0 program also provides an opportunity for applicants to have an interview with the Examiner and this increased communication often led to efficient resolution of prosecution. 

On August 26, 2020, the U.K. Supreme Court wrote another chapter in the saga of global FRAND dispute resolution. The court’s landmark Unwired Planet v. Huawei decision affirms a U.K. court’s jurisdiction to set a global FRAND rate for a license to standard essential patents held by Unwired Planet and practiced by Huawei in countries around the world. The decision was long-awaited in litigation which has been closely watched by the entire telecommunications industry. Another dispute involving Huawei, ZTE, and Conversant raised the same issues and was consolidated for the Supreme Court appeal. A number of stakeholders intervened in the proceedings to set out their views on industry practices and on the interpretation of the European Telecommunications Standards Institute’s intellectual property policy.